WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Julius Blum GmbH v. Shen Zhen Shi Xin Yi Jin Zhuang Shi Cai Liao You Xian Gong Si

Case No. D2015-2153

1. The Parties

The Complainant is Julius Blum GmbH of Höchst, Austria, represented by Patentwälte Torggler & Hofinger, Austria.

The Respondent is Shen Zhen Shi Xin Yi Jin Zhuang Shi Cai Liao You Xian Gong Si of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <blum-china.com> is registered with HiChina Zhicheng Technology Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2015.

On December 2, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 4, 2015, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, in English and Chinese, and the proceeding commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2015.

The Center appointed Francine Tan as the sole panelist in this matter on January 13, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On January 28, 2016, the Panel issued an Administrative Panel Procedural Order in English and Chinese requesting the Complainant to furnish evidence of the use of the disputed domain name and evidence of the Complainant’s ownership over the domain name <blum.com>. The Respondent was invited to make further comments in reply to the Complainant’s submission by February 5, 2016. On January 29, 2016, the Complainant submitted the requested evidence. The Respondent did not comment on the Complainant’s submission by the specified due date.

4. Factual Background

The Complainant, a multinational corporation, is a manufacturer of high-quality furniture fittings. It was founded in 1952 and has more than 6,800 employees worldwide.

The Complainant has registered numerous trade marks including in China for the BLUM mark and for the BLUM & arrow device mark. For instance, International Registration Nos. 1171363, 598611 and 996626 provide protection for different types of furniture fittings in Classes 6 and 20 and in which China is designated.

The Complainant states it has spent an enormous amount of money in advertising and promoting its products and services under the BLUM trade mark in China, as a result of which the BLUM mark has become recognized and famous in China.

The Complainant owns the domain name <blum.com> and maintains its website at “www.blum.com”.

The disputed domain name was registered on July 15, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) The disputed domain name is nearly identical or confusingly similar to the BLUM trade mark in which it has rights. The word “blum” is fully incorporated and the addition of the geographical suffix “china” does not eliminate confusion with the Complainant’s trade mark. The Respondent is using the disputed domain name in connection with the sale and advertisement of furniture fittings.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or authorized the Respondent to register or use its trade mark BLUM in a domain name. The Respondent is improperly using the mark BLUM with the geographical wording to confuse consumers into believing that they have reached the Complainant’s website for China, or to create a false impression that the Respondent is associated or affiliated with the Complainant.

(iii) The disputed domain name was registered and is being used in bad faith. The Respondent had the fraudulent intent, for financial gain, to lure Internet users into believing that the Respondent is, or is affiliated with the Complainant. When registering the disputed domain name, the Respondent must have been aware of the Complainant which was been conducting business in China since 2001. The Respondent at its website to which the disputed domain name resolves offers for sale furniture fittings bearing the Complainant’s registered BLUM and BLUM & arrow device trade marks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement in this case is Chinese. The Complainant, however, requested that English be the language of the proceeding on the basis that the Respondent is familiar with English since the disputed domain name resolves to a webpage which contains portions in English e.g., “new art into decoration material”, “all rights reserved”, “more” and “copyright”. The Respondent chose an English trading name as shown on the homepage, i.e., Shenzhen New Art Into Declaration Material Co., Ltd.

The Respondent did not respond on the issue of the language of the proceeding.

Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:

“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”

The Rules prescribe a language requirement as noted above. Nevertheless, the Panel has also to ensure that the proceeding takes place with due expedition. The disputed domain name in this case contains English terms with a specific reference to the BLUM trade mark of the Complainant; the trade mark also features in the Respondent’s website. The Respondent has been afforded the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has not done so. On the other hand, requiring the Complainant to submit translations of the Complaint and evidence into Chinese would hinder the expeditious resolution of this dispute. The Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding especially since the communications from the Center relating to the nature of the dispute, the language of the proceeding, as well as relevant deadlines pertaining to the administrative proceeding, were transmitted in both English and Chinese.

The Panel therefore determines that English should be the language of the proceeding in this case.

B. Identical or Confusingly Similar

The Complainant has shown it is the registered proprietor of the trade mark BLUM. The question then is whether the addition of the word “china” and hyphen in the disputed domain name is sufficient to remove the confusing similarity with the trade mark. The Panel finds it does not. It is a well-established principle and consensus has been achieved amongst many UDRP panelists that the addition of a generic or descriptive term or elements such as a hyphen does not serve to remove the confusing similarity or identity with a trade mark of a complainant where the trade mark is recognizable within the domain name. (See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In the circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BLUM trade mark.

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a few non-exhaustive examples whereby a respondent can demonstrate its rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name and neither is there evidence of a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The evidence submitted by the Complainant also shows evidence which contradicts any claim that may be made that the Respondent has been using the disputed domain name “in connection with a bona fide offering of goods or services”.

The Respondent has not refuted the prima facie case established by the Complainant (see paragraph 2.1, WIPO Overview 2.0). The Panel accordingly concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The disputed domain name incorporates the Complainant’s BLUM trade mark in its entirety and suggests to Internet customers looking for the Complainant that the Respondent’s website is that of the Complainant’s subsidiary or authorized dealer or distributor in China. Further, the Respondent is obviously familiar with the Complainant, its trade marks and products. The presentation of the BLUM and BLUM & arrow device marks on the Respondent’s website as well as the specific choice of words forming the disputed domain name reflect that the intention in registering the disputed domain name must have been to divert Internet traffic. There is no relationship between the Respondent and the Complainant. These facts and circumstances have not been disputed or rebutted by the Respondent.

The Panel finds therefore that the Respondent has, “by using the [disputed] domain name, intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy).

The Panel is therefore satisfied that the third element under paragraph 4(a) of the Policy has been established by the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <blum-china.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: February 6, 2016